We will be discussing the later effective provisions of the recently enacted America Invents Act and the patentability of software in our weekly SoCal IP Institute meeting on Monday, September 26, 2011. Brief synopses are presented below.

The America Invents Act, (Signed September 16, 2011) (attached).  We will be discussing the provisions of the America Invents Act that go into effect after September 26, 2011.  These include changes to the statute as it relates to:

Third Party Submissions of Prior Art

Supplemental Examination

The Inter Partes Review Procedure

The Post Grant Review Procedure

First to File Invention

Each of these changes take effect after September 26, 2011.  A useful summary of the effective dates prepared by the U.S.P.T.O is also attached.  We will discuss the effect these changes will have on prosecution practice and litigation strategy for our clients.

Ultramercial, LLC et al. v. Hulu et al., Case No. 2010-1544 (Fed. Cir. Sept. 15, 2011 (attached). This case is yet another in a recent line of cases including CyberSource that discusses the line between an abstract idea and Section 101 patentable subject matter in software. This case is most interesting because it appears to suggest that the complexity of a claimed algorithm or procedure may have some bearing upon its patentablity under Section 101.

This case includes an assertion of a patent related to payment for the display of media content including “intellectual property rights protection” (such as digital rights management).  Ultramercial asserted that Hulu, Youtube and WildTangent were infringing this patent by operating their respective video streaming sites.  WildTangent countered in a motion to dismiss that the software claimed by the patent encompassed non-statutory subject matter.  The district court agreed and dismissed Ultramercial’s claims for failure to state a claim.

The Federal Circuit disagreed and found that the patent claimed statutory subject matter.  In particular, the court went to great lengths to discuss that patent eligibility primarily rests upon the novelty, nonobviousness and adequate disclosure.  The court specifically considered the “machine or transformation” test, but declined to apply it to this case.  Here, the court concentrated on the complexity of the specific algorithm for obtaining payment for digital content distributed using the Internet.  As such, the court reasoned that it could not be “abstract.”  The case was reversed and remanded for further proceedings.

All are invited to join us in our discussion during the SoCal IP Institute meeting on Monday, September 26, 2011 at Noon in our Westlake Village office. This activity is approved for 1 hour of MCLE credit. If you will be joining us, please RSVP to Amanda Jones by 9 am Monday morning.